May 9, 2018

Trademark Shenanigans: Weighing In On #Cockygate

If you're a writer, and you hang out on Twitter and Facebook, you've probably heard about #cockygate.

If you haven't....An author named Faleena Hopkins has registered two separatetrademarks for the word "cocky", which is used in all the titles of her multi-book romance series. One of the trademarks is a design mark (the word "cocky" in a stylized font, as seen above); the other is a word mark (just the word "cocky"). Both refer to “a series of downloadable e-books in the field of romance” and “a series of books in the field of romance.”

That description is significant. Because over the past week, Hopkins has begun threatening other romance writers who use "cocky" in their titles--even where those titles are not part of a series, or the word is not used in a series title--with legal action unless they re-title and re-publish their books.

Hopkins says (according to private messages that have been shared with me) that she's "not after people's livelihoods". She also doesn't think what she's demanding is a big deal, because taking down and re-publishing a book is "very simple. So easy." Of course this is a ridiculous claim--especially where writers have multiple editions on multiple platforms, not to mention financial investments in swag, advertising, websites, and other branding efforts.

There's been plenty of coverage of this bizarreincident. Legal experts have weighed in as well. I spoke with trademark attorney Brad Frazer, who provided me with some clarifying information on a complex and confusing issue.

Note that neither of [Hopkins' trademarks] is, for example, “a trademark on the word ‘COCKY’ as used in book titles.” The registrations cover a book series, and this is made evident if one looks at the 9-page specimen of use she submitted to the Trademark Office to support the registration: http://tsdr.uspto.gov/documentviewer?caseId=sn87604968&docId=ORC20180416120311#docIndex=9&page=1. Note that “Cocky” appears in each of the titles in a manner that connotes that the book is printed as part of the “Cocky”-brand book series. Indeed, without the fact the word is used as part of a book series, it is unlikely Hop Hop Productions [Hopkins' company] could have obtained the registrations.

This is because--and this is critical--in order for a trademark to exist and be registrable and enforceable, it must perform a “source identification function.” Here, Hop Hop was able to convince the Trademark Office that it has, since June of 2016, used the word “Cocky” to indicate the SOURCE of a series of romance books, and thus it was able to get it registered. There likely had to be a series of books for Hop Hop to convince the Trademark Office that the word “Cocky” performed this source identification function—one book with “Cocky” in the title would likely not have been enough to convince the Trademark Office, especially given that Hop Hop has ostensibly used the mark for less than two years. Just like when people see “Harlequin” on a book, they think of Harlequin Enterprises as the SOURCE of that book because “Harlequin” indicates more than just a book title. It indicates the SOURCE. See http://tsdr.uspto.gov/documentviewer?caseId=sn72184920&docId=ORC20081030112630#docIndex=10&page=1.

Because source identification is necessary to create and register a trademark, in order for there to be trademark INFRINGEMENT, as Hop Hop has apparently alleged in certain cases, the allegedly infringing “thing” must also be performing a source identification function. Thus, not all uses of a word perform a source identification function, and if there is no such use, there likely can be no trademark infringement.

For example, imagine I titled my book, “The Apple Tree and the Pheasant.” Would a consumer realistically believe that Apple Computer was the source of that book? No. Or, imagine I titled my book, “The Harlequin Pleased the King.” Based strictly on that use of the word “harlequin,” would a consumer think that Harlequin Enterprises was the source of my book? No, and thus no trademark infringement.

This is supported by what is called in trademark law the “classic fair use defense.” It is well-settled that you may use a third party’s trademark in the ordinary, English-language sense of the word, and as long as it was not performing a confusing, source-identification function, there is likely no trademark infringement. For example, if I wrote a story about King Neptune and his trident and I titled it, “King Neptune’s Powerful Trident,” if I got sued by the owner of the “Trident” trademark (see http://tsdr.uspto.gov/documentviewer?caseId=sn71653425&docId=ORC20110315095116#docIndex=18&page=1), I would have a very good classic fair use defense in that lawsuit since I am using the word “trident” in its normal, English-language construction (see https://www.merriam-webster.com/dictionary/trident) and NOT TO INDICATE THE SOURCE OF THE BOOK.

Thus, if you have one book and it is titled, for example, “The Gardener was a Cocky Lad,” I invite you to ask: is your use of the word “cocky” performing a source identification function such that people would be confused into thinking that Hop Hop was the source of your book? Is it being used only in a classic fair use sense to describe the gardener in your story as cocky, as defined by Webster? (See https://www.merriam-webster.com/dictionary/cocky)

Now, trademark law is very fact specific, and each case must be decided on its relative merits. There may be some cases in which use of the word “Cocky” in a book title does create a likelihood that a consumer would be confused into believing that Hop Hop was the source of that book. But that is the test. Without that likelihood of consumer confusion, proving trademark infringement is very difficult. But please consider these factors if you receive an allegation of trademark infringement as to your book titles.

Most legal commentary that I've read on l'affaire Cocky seems to agree that Hopkins' trademarks wouldn't stand up to a legal challenge. But authors who receive her threats--which admittedly are scary--may not realize this, or be able to afford legal counsel (at least some authors have already re-titled their books). Also, more concerningly, Hopkins is sending takedown requests to Amazon, which appears to be complying in at least some cases. Once Amazon takes down your book in response to a challenge, getting it reinstated is a nightmare.

UPDATE: RWA has successfully interceded with Amazon, which has agreed not to take down any more books and to reinstate any that were removed.

Amazon has responded to our request to say that they will not be removing titles from sale until this matter is resolved and have reinstated those they previously removed. We are still in discussion with counsel as to next steps and will report more as we are able. https://t.co/MCheapueye

UPDATE 5/30/18: Hopkins is doubling down: she has filed for preliminary injunctions and temporary restraining orders against Jennifer Watson, Tara Crescent, and Kevin Kneupper, claiming that Watson and Crescent are infringing her trademarks (Crescent is an author who uses "cocky" in some of her titles, and Watson is a member of the Cocky Collective, a satirical group that is producing an anthology called Cocktales: The Cockiest Anthology) and that Kneupper's petition to the USPTO to cancel the "cocky" trademarks is without merit.

The temporary restraining order has been denied. A hearing on June 1 will address the preliminary injunction.

Kneupper has posted the legal documents (in which, among other things, Hopkins claims that it's easy to cause consumer confusion in the romance field because "romance novel series consumers do not exercise a high degree of care", and compares the alleged infringers to "a pack of blood-thirsty wolves") on Twitter.

UPDATE 6/3/18: Thanks to the Authors Guild and RWA, Faleena Hopkins' motion for a preliminary injunction against Tara Crescent and Jennifer Watson has been denied. The judge in the case found that "Hopkins was not likely to succeed on the merits because the word 'cocky' is a common and weak trademark, there was no evidence of actual confusion, and romance readers are sophisticated consumers—meaning that they are not likely to confuse Hopkins’ and Crescent’s books."

This doesn't mean the case is over, unfortunately. Discovery must be completed by September 7, and a status conference has been scheduled for September 14. Lawyers for the defendants plan to move to dismiss prior to those dates.

Jennifer Watson and the Cocky Collective are happy to announce a settlement has been reached in Hop Hop Productions, Inc. v. Kevin Kneupper, Tara Cresent and Jennifer Watson. The plaintiff has surrendered her trademark registrations for COCKY and has withdrawn the lawsuit.

Authors can now use "cocky" in as many titles as they please, without fear of harassment from Hopkins. Good news indeed.

18 comments:

Thank you taking the time to write about this. Although I am not personally impacted, this is a big deal to authors whose books have "cocky" in the titles. Many of those existed long before this author whose name I won't mention because she's soaking up publicity. Changing a book title is not free, especially given the cost of producing promotional material.

Thanks for this information, particularly the explanation from Brad Frazer. I'm hopeful that both Amazon and the USPTO (U.S. Patent & Trademark Office) will see the light on this issue. Allowing an author to TM a single word sets a dangerous precedent that will bring havoc to the publishing world.

I can see why authors would just see it as not worth the hassle and change their titles. I didn't get a formal legal challenge but once someone emailed me about a superhero character in a few of my books called Velocity Girl. He had some self-published books with virtually no sales rankings featuring a superhero with the same name. (It's also the name of a Snow Patrol song.) I could have told him where to shove his email but I was moving at the time and didn't feel like getting into a whole legal thing. It was easier to just find and replace in Word and repost on Amazon.

I've read some claims that reviews are being removed if they have "cocky" in them. https://twitter.com/MuseAlaCarte/status/994008826759335936 I don't know how true that is, but that would indicate a serious problem at Amazon to me if they'd go that far on the basis of a trademark claim.

I'm no attorney, but I'm wondering if this case could be brought under Strategic Liability Against Public Participation (SLAPP). When someone sues for no better reason than to shut people out of public discussion, that is called "chilling." The idea is to scare people into silence by the threat of overwhelming legal costs. Many states in the US have anti-SLAPP statutes.. Successful defendants in such cases often receive double or triple damages and may recover all of their allowable legal costs. The statutes were written as a deterrent to ridiculous lawsuits. A good attorney versed in SLAPP should be able to check its applicability. The neat thing about the statutes is that the claimant suddenly becomes the defendant and has no basis to attract contingency representation.

I can't help wondering if this isn't simply a ballsy marketing stunt to promote her books. History has often proved that the moment a book is banned, for whatever reason, sales go through the roof. This despicable action seems to indicate she's getting the publicity...but it can also turn off readers, so....author beware, this could come back and bite you.

To Hopkins, who claims to be a writer, one might advise her to read up on the end of the life of Oscar Wilde. Most of us know that he was a real writer who nevertheless made a similar mistake in a petty attempt to claw back something that literally cost him everything.

But suppose, as turns out to be the case (now proven) Hapkins did not have "The Cocky Series" as part of her original series title? Rather, that series title from 2016 was "The Cocker Brothers". She only added "The Cocky Series" to the series title on April 8, 2018, AFTER she has begun the registration process. Is the legal? And does it not affect date of first merchandizing?

It is #byefaleena, not feleela. And everyone who Amazon wrongly effected should now sue Amazon for violation of their right to free speech. It isn't Amazon or Faleena's p liace to dictate this stuff. Amazon crossed the line woth ots authors, based on an idiits request and that is criminal.

I’m not a published author yet—I intend to be one, one day—however, this is the reason I have issues with trademark and copyright. These laws are too vague for consumers, makers, and even writers. Some companies and people take advantage of the imagined power these terms give and bully everyone around them to the point of trying to make free trade and free speech cease in its entirety. I wish whoever was needed to clarify these laws be it congress, the supreme court, whoever, would strip them down barebones and revamp them so that it’s clear to EVERYONE, even laymen, what is actually covered and what is not. Frankly, you should not be allowed to copyright or trademark a title in the least, because it takes too much out of the free sector. For example “Frozen” is just a word that means something made solid by cold, and yet the company who came up with a movie based on that title, could likely sue anyone wishing to use a similar title for a book or movie even if it was entirely different than the first “Frozen” and one had nothing to do with the other. Should that be right? “Frozen” is literally a one word adjective, not truly a trademarkable or copyrightable title. And yet, that company could bully everyone on the internet and all would comply to avoid losing everything, even if they did nothing wrong. Trademark and copyright are too vague, too broad, and should be put back into their proper place so that no innocent can be hassled over them ever again.

First Anonymous @ 5/21: You could try to sue, but Amazon would have no problem dismissing, as this isn't a free speech issue. For starters, books aren't speech. For another, Amazon isn't preventing you from publishing your books. It's merely refusing to sell them via its store. Amazon, like any other merchant, is free to chose what to sell.

That's not to say that Amazon behaved correctly in this matter, or that their near-monopoly isn't detrimental to the free market. But telling authors to make a freedom of speech claim isn't helpful at all.

Second Anonymous @ 5/21: it's not really up to Congress any more, as these days intellectual property rights are governed by international treaties. That's probably part of the reason why IP law is such a convoluted mess. That said, neither copyright nor trademark are as vague and broad as you make them out to be (as shown for example in the case discussed above). The main problem is that you need a lawyer to interpret it.

Third Anonymous @ 5/22 from Second Anonymous: the problem isn’t that they are necessarily too vague or broad, but that they are too convoluted to be understood by laymen. I’ll give you an example. Go on Etsy and find a copyright forum and read all the crap spewed on there. They say you can’t make and sell items from a pattern if the pattern designer says you can’t under their copyright. That is a lie. They also say that if you buy anything like fabric or stickers with licensed characters on them you can’t make something out of them and sell it as it would violate copyright. That is also a lie. These people have no idea what the truth is and they spew lies all over the Etsy forums in order to scare sellers to death about using anything that might “violate” someone’s precious copyright.

Now an area where copyright is definitely too broad. A seller on Etsy had a poster with a Dr. Seuss quote. None of his artwork, and no connection to Dr. Seuss, just the words “oh, the places you’ll go.” Etsy took it down, claiming copyright violation against Dr. Seuss and, lo and behold, his estate does have these words copyrighted. By they are just words, and just a phrase. You should NOT be allowed to copyright a phrase! Who’s to say I couldn’t come up with such a commonplace saying on my own? But yet, Dr. Seuss wrote it, so now it’s copyrighted. That’s so wrong on so many levels. If copyright was what it’s been made to be, we better all stop talking and writing, because it’s guaranteed that we are all violating copyright with just about every word we speak.

A visual aid, ever seen ALF? In one episode, Alf got a book of famous quotes, and he was following the father around, finding every last thing the father would say in the book of famous quotes. Every. Last. Thing. Now, it was played up because it was funny, but in reality it is so true. Frankly, the way that copyright laws work today, I could record everything I said into a dictation program that typed it out for me and have it all copyrighted, and then threaten everyone with a lawsuit. And that, right there, is the real problem.

No disrespect meant to you. I don’t know who has to deal with it, but for crying out loud someone should.

@all anonymouses 5/21-5/22: You guys are confusing copyright and trademark. This is about trademark, not copyright. Copyright is literally the right to copy a work; not a single word or a phrase or a sentence, an entire work (you can't sell POD copies of "50 Shades of Grey, presented by Faleena Hopkins" for example because 50 Shades of Grey is protected under copyright, but EL James can't sue someone who uses the phrase "shades of grey" for copyright violation because her copyright covers the right to reprint or otherwise replicate her work, it doesn't mean she has any claim over a single word or phrase---that would be a trademark, not a copyright).

Trademark is completely different than copyright and the biggest difference is that even though you don't have to prevent anyone from infringing on your copyright to keep it, you do have to defend your trademark or you can lose the rights to the trademark. This means most people don't try to trademark common words because then they end up in court all day trying to explain why no one else except them should be able to use the word "cocky" or "saga," but then some people don't have much sense or thing a huge legal dispute where they come off like an entitled child would make for good publicity... and then we end up here.

-Ego Chamber (I don't have any of the accounts available to sign in with)